Shiokawa states that a 1,3,5-oxadiazine is inherently produced by following the cyclization
process of Example 5 of the ‘146 patent. According to Shiokawa, this “fact is established in the
declaration testimony of Dr. Peter Jeschke. SX 2056.” (Shiokawa Corrected Preliminary Motion 1,
Paper No. 74, p. 10). Shiokawa alleges that a person of ordinary skill in the art would have
recognized “the likelihood” that a 1,3,5-oxadiazine would be co-produced in working example 5.
(Paper No. 74, p. 23). Moreover, Shiokawa states that one skilled in the art would understand that a
1,3,5-oxadiazine is produced during the reaction described in Example 5 as follows:
(Paper No. 74, p. 24).
Shiokawa contends that the “inherent” formation of a 1,3,5-oxadiazine compound in example 5
of the ‘146 patent is a “blazemark” demonstrating sufficient written description for its claims 1,3,5-
oxadiazine subgenus. Yet, Shiokawa has not demonstrated that a 1,3,5-oxadiazine intermediate
compound is “inherently” present in the resulting product of the reaction of example 5. Inherency is not
established by probabilities or possibilities. The mere fact that a certain thing may result from a given
set of circumstances is not sufficient to demonstrate inherency. In re Oelrich, 666 F.2d 578, 581, 212
USPQ 323, 326 (CCPA 1981). Thus, in order to demonstrate that a 1,3,5-oxadiazine intermediate
compound was formed in example 5 of the ‘146 patent, Shiokawa needs to demonstrate that a 1,3,5-
oxadiazine compound would necessarily be present in the final product of example 5.
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